Look Before You Leap – Conducting an Australian Trade Mark Search

By Michelle Conomos


Zoe Foster Blake, the Aussie author of a relationship book and app, Break-Up Boss, has recently made headlines after being forced to recall her ‘Break-Up Boss’ merchandise from sale.  The merchandise was recalled upon learning that a ‘very well-known international fashion brand’ already had trade mark rights to the word BOSS.

The Aussie author recently launched t-shirts to promote the book and app featuring the word BOSS.  However, she sheepishly admitted she hadn’t done any checks to see if there were any trade mark or common law right issues around the word prior to using it.

Zoe’s story highlights the importance of conducting trade mark clearance searches prior to developing or launching a new brand or applying for a trade mark.  Conducting a trade mark clearance search will identify if there are any potential obstacles to the use or registration of your trade mark and help you make informed decisions about trade mark eligibility prior to committing to a brand name.   While this may seem like a low priority or extra cost when you are starting up or growing your business, this step can potentially save you thousands of dollars in legal costs and rebranding should a trade mark dispute arise.

Although conducting your own search via the Australian Trade Marks Register is a good starting point, we recommend engaging an experienced trade mark attorney to ultimately conduct a comprehensive trade mark search.  A comprehensive search includes common law search and searches of other available databases, in addition to the Australian Trade Marks Register, thereby providing you with the full picture before committing to your new brand.

At IP Gateway, our team of experienced and qualified trade mark attorneys can conduct a comprehensive clearance search for you, and if the trade mark is clear, assist you in applying to protect your trade mark.  We provide you with a search report together with comprehensive advice clearly presenting any commercial and legal risks for your consideration.

If you require assistance with a trade mark clearance search, please contact IP Gateway Patent and Trade Mark Attorneys on 07 3808 3566 or email us to mail@ipgateway.com.au.

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